WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reckitt Benckiser Group plc v. Johnny Steel Case No. D2009-0783 1. The Parties
Complainant is Reckitt Benckiser Group plc of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Field Fisher Waterhouse, United Kingdom of Great Britain and Northern Ireland.
Respondent is Johnny Steel of Phillipstown, Christchurch, New Zealand, represented by Cameroun & Co., New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2009. On June 15, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 15, 2009, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 10, 2009.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 22, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is in the business of manufacturing and supplying household, healthcare and personal care products.
Complainant shows to be the holder of the following NUROFEN trademarks:
(i) United Kingdom trademark registration n°. 1155787 NUROFEN in class 5 for “pharmaceutical preparations and substances having anti inflammatory , anti pyretic and analgesic properties”, filed on June 16, 1981 (and registered from that date);
(ii) New Zealand trademark registration n°. 143558 NUROFEN in class 5 for “pharmaceutical preparations and substances”, filed on August 11, 1982 and registered on September 17, 1985;
(iii) Australian trademark registration n°. 379824 NUROFEN in class 5 for “pharmaceutical preparations and substances”, filed on August 17, 1982 and registered on September 6, 1984; and
(iv) European Community trademark registration n°. 1001312 NUROFEN in class 5 for “pharmaceutical preparations and substances”, filed on November 30, 1998 and registered on December 9, 1999.
In 2006, Complainant acquired the business and trademarks of Boots Healthcare International Limited, including the NUROFEN brand, from The Boots Company Plc. The NUROFEN trademark in the United Kingdom of Great Britain and Northern Ireland was assigned to Reckitt Benckiser Healthcare (United Kingdom of Great Britain and Northern Ireland) Ltd. and registrations in other countries were assigned to Reckitt & Colman (Overseas) Ltd.
Both Reckitt Benckiser Healthcare (United Kingdom of Great Britain and Northern Ireland) Ltd. and Reckitt & Collman (Overseas) Lt. are wholly owned member companies of the Reckitt Benckiser Group of Companies, of which the ultimate parent company is Reckitt Benckiser Group plc, Complainant in the present case.
The NUROFEN trademark is used on a range of pharmaceutical products having analgesic, antipyretic and/or inflammatory properties. Nurofen products are currently sold by Complainant in various countries.
Complainant proves to be the holder of the domain names and , registered on January 8, 1997 and March 10, 1997 respectively.
It is stated in the WHOIS records that Johnny Steel, Respondent in the instant case, is the current holder of the disputed domain name , which he registered on March 16, 2006 with Enom, Inc.
The disputed domain name is linked to a website, that purports to offer for sale various pharmaceutical products to registered members. From the Internet archive tool WayBack Machine, it appears that Respondent has been selling, via the website, Complainant's products and products that compete with Complainant's products. A printout of the home page as it appeared on February 13, 2008 shows Respondent selling products including Nurofen Plus, Panafen Plus, panadeine Plus and Chemist Own Pain Relief. A printout of the home page as it appeared on August 24, 2007 shows Respondent selling products including Nurofen Plus, Panadeine Plus and Codalgin. A printout of the home page as it appeared on February 27, 2007 shows Respondent selling products including Nurofen Plus, Panadeine Plus and Codalgin and Nurofen Gel.
Respondent also registered the domain name on May 24, 2006. 5. Parties' Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to Complainant, Respondent has not used the domain name in connection with a bona fide offering of services or a legitimate non-commercial use. Also, Respondent has not been commonly known by the domain name, according to Complainant.
Finally, Complainant considers that the domain name was registered and being used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in Paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant is the holder of the widely known NUROFEN trademark, that is used on a range of pharmaceutical products having analgesic, antipyretic and/or inflammatory properties.
Complainant uses the NUROFEN trademark also for a product Nurofen Plus. The name of the product Nurofen Plus is identical to the domain name , since the addition of a top level domain does not affect the domain name for the purposes of determining whether it is identical or confusingly similar (see Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429).
However, Complainant does not show to have registered trademark rights in NUROFEN PLUS.
Nonetheless, Complainant shows to have registered trademark rights in NUROFEN. The Panel considers the disputed domain name to be composed of a name identical to the NUROFEN trademark and the non-distinctive generic term “plus”.
The Panel is of the opinion that the mere addition of non-distinctive text to a Complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download Complainant's software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by complainant; Nintendo v. Beijin,WIPO Case No. D2001-1070, where the addition of the words ‘mail', ‘post', ‘fan' and ‘top50' to the word ‘POKÉMON' in the disputed domain names was held to be of minimal impact on what the Internet visitor focuses on, namely the word ‘POKÉMON'; Nintendo v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word ‘games' in the domain name does nothing to reduce its confusing similarity with Nintendo's POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the domain name in order to shift the burden of proof to Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094 ; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 ; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110 .)
The Panel notes that Respondent has not been commonly known by the domain name and that Respondent has not acquired trademark or service mark rights. Respondent's use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate non-commercial or fair use of the domain name.
The disputed domain name is linked to a website, that purports to offer for sale various pharmaceutical products to registered members. From the internet archive tool WayBack Machine, it appears that Respondent has been selling, via the website, Complainant's products and products that compete with Complainant's products. A printout of the home page as it appeared on February 13, 2008 shows Respondent selling products including Nurofen Plus, Panafen Plus, panadeine Plus and Chemist Own Pain Relief. A printout of the home page as it appeared on August 24, 2007 shows Respondent selling products including Nurofen Plus, Panadeine Plus and Codalgin. A printout of the home page as it appeared on February 27, 2007 shows Respondent selling products including Nurofen Plus, Panadeine Plus and Codalgin and Nurofen Gel.
The Panel is of the opinion that a reseller cannot be making a bona fide offering of goods and services if the use of the site is not to sell only the trademarked goods and/or accurately disclosing the registrant's relationship with the holder of the trademark.
In the present case, Respondent appears to sell various pharmaceutical products on its website and has at least in the past used its website to sell pharmaceutical products of both Complainant and of Complainant's competitors. Moreover, by the use of colors, the copyright notice and the absence of a disclaimer, Respondent creates an impression that the website is an official website of Complainant or is authorized or licensed by it.
As a result, Complainant has made a prima facie showing that Respondent has no right or legitimate interest in the domain name, which Respondent has not rebutted. Accordingly, Complainant has made out the second element that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the use of the domain name for intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. Bad faith Registration
In the instant case, Respondent must have had knowledge of Complainant's rights in the NUROFEN trademark at the moment he registered the disputed domain name, since Complainant's trademark is a widely known trademark. Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith at the moment of registration (See Nintendo v. Beijin,WIPO Case No. D2001-1070, where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of complainant's rights in the trademarks).
Since Respondent must have had knowledge of Complainant's rights in the NUROFEN trademark at the moment he registered the disputed domain name, and since Respondent had no legitimate interest in the disputed domain name, it is established that the domain name was registered in bad faith. Bad faith Use
Moreover it is established that Respondent registered and used the disputed domain name, including Complainant's widely known trademark, for the purpose of intentionally attracting users to Respondent's website by suggesting that Respondent's website is affiliated with or endorsed by Complainant. Respondent obtains commercial benefit through the selling of pharmaceutical products on its website. Such use here constitutes bad faith according to paragraph 4(b)(iv) of the Policy (See Milwaukee Radio Alliance, L.L.C. v. WLZR FM Lazer 103,WIPO Case No. D2000-0209, where it was held that there was bad faith were a domain name holder seeks to create an “initial confusion on the part of Internet users with regard to the source of the Domain Name”; Nokia Corp. v. N,WIPO Case No. D2000-0102, where it was held that respondent was taking a free ride on the goodwill of complainant's trademark through the use of a domain name aiming at creating traffic to its website).
These circumstances support a finding of bad faith use pursuant to Paragraph 4(b)(iv) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: August 4, 2009
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